Ex Parte Chen et al

Board of Patent Appeals and Interferences

Oct 8, 2009

10657343 (B.P.A.I. Oct. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN CHEN, KWOK FAI LAI, KUOK SANG
LEONG, MAN TAT YIP, WAI SHUN LEUNG,
CHUN WING NG, and QUINCY LEE
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Appeal 2009-003614
Application 10/657,343
Technology Center 2800
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Decided: October 09, 2009
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 3-9 and 12-16. Claims 18 and 19, which are the only

Appeal 2009-003614
Application 10/657,343

other pending claims, stand withdrawn from consideration by the Examiner.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a multiport connector. Claim 3 is illustrative:
3. A multiport connector, which comprises:

a housing having at least two aligned compartments, each
compartment being structured and arranged to receive respective plugs;

a multilayer printed wiring board separating the two compartments,
the printed wiring board having circuit patterns on opposite sides of opposed
non-conductive layers and a metal shielding layer intermediate the non-
conductive layers;

a first plurality of conductive contact fingers in one of the
compartments, the first plurality of fingers having first portions for making
electrical contact with one of the plugs and second portions for making
contact with the circuit pattern on one of the non-conductive layers of the
multilayer printed wiring board; and

a second plurality of conductive contact fingers in the other of the
compartments, the second plurality of fingers having first portions for
making electrical contact with the other one of the plugs and second portions
for making contact with the circuit pattern on the other one of the non-
conductive layers of the multilayer printed wiring board.

The References
References relied upon by the Examiner
Goodall 5,531,612 Jul. 2, 1996
Yamamoto 5,865,934 Feb. 2, 1999
Wu (Wu ‘260) 6,132,260 Oct. 17, 2000
Kunz 6,171,152 B1 Jan. 9, 2001
Laity 6,183,308 B1 Feb. 6, 2001
Reference relied upon by the Appellants
Wu (Wu ‘725) 6,206,725 B1 Mar. 27, 2001
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The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 3-
6 and 8/3-8/6 over Wu ‘260 in view of Yamamoto and Kunz; claims 7
and 8/7 over Wu ‘260 in view of Yamamoto, Kunz and Laity; claims 9/8/3-
9/8/6 and 12-15 over Wu ‘260 in view of Yamamoto, Kunz and Goodall;
and claims 9/8/7 and 16 over Wu ‘260 in view of Yamamoto, Kunz, Laity
and Goodall.
OPINION
We affirm the rejections of claims 3-6, 8/3-8/6, 9/8/3-9/8/6 and 12-15,
and reverse the rejections of claims 7, 8/7, 9/8/7 and 16.
Rejection of claims 3-6 and 8/3-8/6 over Wu ‘260 in view of
Yamamoto and Kunz, and claims 9/8/3-9/8/5 and 12-15
over Wu ‘260 in view of Yamamoto, Kunz and Goodall
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, 1) a multilayer printed wiring
board having a metal shielding layer between non-conductive layers, and
2) a compartment having a metal separator between two sets of toroids?
Findings of Fact
Wu ‘260 discloses “a stacked connector assembly having modular
members integrally assembled together via a middle circuit board” (col. 1,
ll. 56-57). “The middle circuit board 7 comprises an inner circuit (not
shown) and a plurality of electronic elements (not shown) for performing
certain functions, such as grounding, anti-cross-talk, filtering impure signal,
etc.” (col. 3, ll. 39-42). On opposite surfaces of middle circuit board 7 are
contact fingers (70) which are sandwiched between and electrically contact
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connecting sections (42) of upper and lower rows of mating contacts (4)
(col. 3, ll. 60-65; Fig. 1).
Yamamoto discloses a multilayer printed wiring board having,
between insulating layers (22), a metal plate (21b) which “serves as a
support, a reinforcement and a heat sinking element as well as a ground
electrode” (col. 9, ll. 55-61).
Kunz discloses a modular connector that comprises two layers of
toroids (64-67, 70-73) and includes Faraday shield pieces (74, 76, 78) that
constitute a continuous shield around the modular connector (col. 5, ll. 7-10;
Fig. 3).1
Analysis
The Appellants argue that there is no reason why one skilled in the art
would use Yamamoto’s metal plate 21b, one purpose of which is to provide
heat sinking, in an application in which heat generating elements are not
employed, particularly where such a multilayered board would add
considerable cost (Br. 5). The Appellants argue that they are not merely
reciting another advantage of Yamamoto’s metal plate 21b, i.e., that it
provides electrical shielding. See id.
The Appellants have not established that none of Wu ‘260’s
exemplified circuit board elements (col. 3, ll. 39-42) generates heat.
Moreover, because Wu ‘260 does not limit the types of circuit board
elements that can be used, it appears that Wu ‘260 would have led one of
ordinary skill in the art, through no more than ordinary creativity, to use
circuit board elements including those that generate heat. See KSR Int’l. Co.

1 Goodall is not relied upon by the Examiner for a disclosure that is relevant
to the above-stated issue (Ans. 5-6).
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v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”). As for the Appellants’
argument that a multilayer circuit board would cost more, the Appellants
have not established that any added cost would have been sufficiently high
that one of ordinary skill in the art would have considered a multilayer
circuit board to be unsuitable in Wu ‘260’s modular connector.
The Appellants argue that Wu ‘725 provides inner shielding “by an
inner shielding member 3 which is vertically disposed behind the upper and
lower compartments rather than incorporated in circuit boards of the upper
and lower compartments or disposed horizontally between the circuit
boards” (Br. 4). The Appellants ask: “Why would one skilled in the art be
motivated to replace a shielding technique already shown to work in the Wu
connector and instead use a different, unproven shielding technique? (Br. 4-
5).
Wu ‘725’s vertical inner shield member 3 (col. 2, ll. 62-64; Fig. 3)
would not provide shielding between the layers of a multilayer circuit board.
Hence, one of ordinary skill in the art who desired shielding between the
layers of a multilayer circuit board would have placed between the layers a
shield other than Wu ‘725’s vertical inner shield member 3.
The Appellants argue that “no part of [Kunz’s] shield, let alone the
part 74, separates the sets of toroids from one another but, instead, the entire
shield surrounds all of the sets” (Br. 6).
Although Kunz states that Faraday shield pieces 74, 76 and 78
constitute a continuous shield around the modular connector (col. 5, ll. 7-
10), as indicated by the dotted lines in Kunz’s Figure 3 which show how the
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pieces of the modular connector fit together, it appears that when the
modular connector is assembled, shield piece 74 is between the upper row of
toroids (70-73) and the lower row of toroids (64-67) and, therefore, provides
a shield between those rows.
The Appellants argue that the Examiner is dissembling Kunz’s
Faraday shield and combining piece 74 with Wu ‘260 for a purpose not
taught by Kunz (Br. 6).
Kunz’s placement of shield piece 74 between the rows of toroids
would have indicated to one of ordinary skill in the art that shielding
between rows of toroids is desirable. Hence, Kunz would have led one of
ordinary skill in the art, through no more than ordinary creativity, to place a
shield between rows of toroids in Wu ‘260’s modular connector. See KSR,
550 U.S. at 418.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, 1) a multilayer printed wiring
board having a metal shielding layer between non-conductive layers, and
2) a compartment having a metal separator between two sets of toroids.
Rejections of claims 7 and 8/7 over Wu ‘260
in view of Yamamoto, Kunz and Laity, and
claims 9/8/7 and 16 over Wu ‘260 in view
of Yamamoto, Kunz, Laity and Goodall
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
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obvious, to one of ordinary skill in the art, contact fingers that are resilient
and are forced into electrical contact with circuit patterns by spring action?
Findings of Fact
Laity discloses a contact wire (354) having a solder tail (358) at which
it is soldered to a printed circuit board assembly (PCBA 310) (col. 10, ll. 8-
12).2
Analysis
The Appellants argue that “there is no teaching in Laity to connect
portions of contacts to a printed wiring board by spring pressure but, to the
contrary, Laity teaches soldering” (Br. 7).
The Examiner argues that “the fact that solder may be subsequently
applied does not deny that a spring connection is initially formed” (Ans. 9).
The Examiner has not pointed out where Laity discloses that a spring
connection initially is formed. Nor has the Examiner explained how an
initial spring connection is inherent or why, in view of Laity’s disclosure
that the connection is by soldering (col. 10, ll. 8-12), one of ordinary skill in
the art would have considered an initial spring connection to be desirable.
Conclusion of Law
The Appellants have shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, contact fingers that are resilient
and are forced into electrical contact with circuit patterns by spring action.

2 Goodall is not relied upon by the Examiner for a disclosure that is relevant
to the above-stated issue (Ans. 5-6).
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Rejection of claim 9/8/6 over Wu ‘260 in
view of Yamamoto, Kunz and Goodall
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, conductive contact fingers having
circuit pattern-contacting portions that are spaced apart by greater distances
than the spacings between portions that make electrical contact with a plug?
Analysis
The Examiner argues that an inspection of Wu ‘260’s Figure 1 shows
that the spacings between the contact finger portions (42) that contact middle
circuit board 7 are greater than the spacings between the portions (41) that
contact a plug (Ans. 9-10).
The Appellants strongly disagree “that Fig. 3 or any other Figure
show[s] spacing differences between 41 and 42” (Br. 8). The Appellants
argue that there is no “teaching or suggestion in the speciation [sic,
specification] to that effect” and that “[s]urely, if the spacing were different,
the patentee would have so noted in the specification.” See id.
Wu ‘260’s Figures 1 and 3, which are not indicated as being drawn to
scale, appear to show that the total horizontal distance encompassed by the
mating contacts 4 is greater at 42 than at 41 and, therefore, appear to show a
greater spacing between mating contacts 4 at 42 than at 41. Regardless,
given the teachings that the portions at 42 contact corresponding contact
fingers 70 on middle circuit board 7, and the portions at 41 contact
corresponding contacts on a mating connector (col. 3, ll. 7-12, 60-65), one of
ordinary skill in the art, through no more than ordinary creativity, would
have matched the spacings at each portion with the spacings between their
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respective contacts. See KSR, 550 U.S. at 418. When the spacings between
contact fingers 70 with which the portions at 42 mate are greater than the
spacings between the contacts on the mating connector with which the
portions at 41 mate, then the spacings between mating contacts 4 would be
greater at 42 than at 41.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, conductive contact fingers having
circuit pattern-contacting portions that are spaced apart by greater distances
than the spacings between portions that make electrical contact with a plug.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 3-6 and 8/3-8/6 over
Wu ‘260 in view of Yamamoto and Kunz, and claims 9/8/3-9/8/6 and 12-15
over Wu ‘260 in view of Yamamoto, Kunz and Goodall are affirmed. The
rejections under 35 U.S.C. § 103 of claims 7 and 8/7 over Wu ‘260 in view
of Yamamoto, Kunz and Laity, and claims 9/8/7 and 16 over Wu ‘260 in
view of Yamamoto, Kunz, Laity and Goodall are reversed.
It is ordered that the Examiner’s decision is affirmed-in-part.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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